Ex parte Brown

Board of Patent Appeals and Interferences

Mar 23, 1999

08126130 (B.P.A.I. Mar. 23, 1999)

Application for patent filed September 24, 1993. 1
According to appellant, this application is a continuation of
Application No. 07/853,846 filed March 19, 1992, now
abandoned; which is a continuation of Application No.
07/614,486 filed November 16, 1990, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 56
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN E. BROWN
____________
Appeal No. 95-1971
Application No. 08/126,1301
____________
HEARD: March 10, 1999
____________
Before MEISTER, FRANKFORT and GONZALES, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1971
Application No. 08/126,130
In the answer the examiner made a new ground of2
rejection based on the combined teachings of Jukes and the
Metals Handbook (see page 4 of the answer). Inexplicably,
however, the examiner expressly withdrew this rejection in the
communication mailed on July 21, 1998 (Paper No. 50).
2
John E. Brown (the appellant) appeals from the final
rejection of claims 3-6, 9-18 and 20-22, the only claims
remaining in the application.
We REVERSE.
The appellant's invention pertains to an article for use
in catching fish that comprises a non-toxic, lead-free
underwater fishing device, at least a portion of which
contains a bismuth alloy. Independent claim 21 is further
illustrative of the appealed subject matter and a copy thereof
may be found in the appendix to the brief.
The reference relied on by the examiner is:
British patent (Jukes) 2207841A Feb. 15, 1989
The following rejection is before us for consideration:2
Claims 3-6, 9-18 and 20-22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the British patent to Jukes.
GB 2207841A (GB) [Jukes] recognizes the use of
non-lead metals in a fishing device to prevent lead
poisoning but fails to show the device containing
[a] bismuth [alloy]. However, metals such as tin,
Appeal No. 95-1971
Application No. 08/126,130
3
lead, antimony, bismuth, cadmium and indium, and
their alloys are well recognized as having a
relatively high specific gravity and a low melting
point; choosing a metal not containing lead from the
group mentioned above, due to their physical
properties, can make the fishing device of GB more
sinkable (due to their specific gravity) and more
easier [sic] for its manufacturing or duplication
process (due to their low melting point).
Therefore, it would have been obvious to one of
ordinary skill in the art to choose bismuth or
bismuth alloys to form the non-lead fishing device
in GB to prevent lead poisoning. [Answer, page 3.]
In support of this position the examiner observes that Jukes
on page 1 states that the materials used in the non-toxic
fishing weight may be a) brass, b) stainless steel, c)
tungsten, copper, nickel, d) nickel, e) nickel silver, f)
steel, g) zinc and h) any other non-lead based material.
We will not support the examiner's rejection. In
rejecting claims under 35 U.S.C. § 103 the examiner bears the
initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence
or argument shift to the applicant. Id. If the examiner
Appeal No. 95-1971
Application No. 08/126,130
4
fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
As the examiner recognizes there is no disclosure in
Jukes of a bismuth alloy. While the examiner makes much of
the fact that Jukes states that the fishing weight may be "any
other" non-lead based material, we point out that it is well
settled that in order to establish a prima facie case of
obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art to make the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). It is of course true that Jukes states on page 1
that "any other" non-lead based material may be used; however,
there is no teaching or suggestion in the prior art adduced by
the examiner which would have lead one of ordinary skill in
this art to single out and select a bismuth alloy from the
myriads of possibilities encompassed by this broad disclosure.
As to the examiner's contention that it is "well recognized"
that bismuth alloys have a high specific gravity and a low
Appeal No. 95-1971
Application No. 08/126,130
5
melting point, we must point out that the mere fact that,
generally speaking, this might be the case does not provide a
sufficient factual basis for establishing the obviousness of
the appealed subject matter within the meaning of 35 U.S.C. §
103. See, e.g., In re GPAC Inc, 57 F.3d 1573, 1582, 35 USPQ2d
1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
The appellant has presented evidence of non-obviousness
in the form of a declaration by Fickling and a self-executed
declaration. However, since the prior art relied on by the
examiner fails to establish a prima facie case of obviousness,
we need not consider the appellant's evidence of
nonobviousness. In re Fine, supra, 837 F.2d at 1076, 5 USPQ2d
at 1600 (Fed. Cir. 1988).
The decision of the examiner is reversed.
REVERSED
Appeal No. 95-1971
Application No. 08/126,130
6
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
bae
Appeal No. 95-1971
Application No. 08/126,130
7
George R. Pepper
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